10. Pulse

The claims of the ENIAC which use the work pulse and which were covered by the May 20, 1963 amendment redefining the term pulse are invalid.

Both the ENIAC Patent as issues in 1964 and the application for the patent as originally filed in 1947 contain claims which employ the term "pulse." That term was a defining element of the claims and was of material importance to the determination of their patentability.

The original application specification described a synchronized computer using coordinated "pulses" as a characterizing part of the description of the invention. The term was expressly defined for purposes of the description of, and the claims to, the invention as follows:

"A pulse is a positive or negative change in potential which has a duration of about two to five microseconds (µ sec.)." [a "microsecond" is one millionth of a second.]

The lengthy specification is replete with detailed operational descriptions designating the pulses employed as being of 2 microseconds or longer duration.

There is no indication of any recognition by the applicants, either in the original application for patent as filed or in the ENIAC patent as issued, that pulses having less than two microseconds duration could be used in a computer, or that higher speed operation would result from the use of such pulses.

The patentability of the ENIAC claims employing the term "pulse," over such prior art as the Harvard Mark I computer system, depended upon material representations of electronic high speed made to the Patent Office. The term used in the claims as originally presented upon the basis of the 1947 disclosure was a material one.

SR's attorney's repeatedly manifested their awareness that the term "pulse" in the ENIAC claims was limited by the definition of the term in the application as filed.

During the case of Sperry Rand, et al v. Bell Telephone Laboratories, Inc., SR, Eckert and Mauchly represented to the Court that the word "pulse," as used in the ENIAC application, was limited to a duration of 2 to 5 microseconds.

As late as December 1962, SR's attorney, Hall, recognized that in the ENIAC application, "...the claims use the word "pulses," and the specification at page 66 defines this word as referring to changes of potential of duration on the order of two to five microseconds."

In December 1962, Hall recognized that this definition was "something of very critical character" and that "many modern computers operate with pulses shorter than two microseconds."

During the period from 1947 to 1963, the state of the art of electronic computers advanced dramatically. The contributions of numerous others in the electronic industry, including Honeywell, had produced speeds of operation many orders of magnitude faster than that of the ENIAC machine.

For example, a modern day CDC computer is about two thousand times faster than the ENIAC machine.

During 1960 and 1961, Honeywell marketed the H-800 computer which used pulses having a duration of less than 0.25 microseconds.

At the time of the filing of the ENIAC patent application on 1947, the ENIAC machine had already been obsoleted by more advance planning, such as that described for example in the von Neumann First Draft Report. Eckert and Mauchly knew this.

In an amendment to the ENIAC patent application, filed on May 20, 1963, by SR's patent lawyer, Hall, the original definition of the term "pulse" was changed by a broadening addition, as follows:

"Within the meaning of the appended claims 'pulse' will be construed to mean a change or excursion in potential or current which has a duration not exceeding about five microseconds."

By this change, the lower limit of the original speed range (two microseconds) was effectively eliminated, thereby rendering the original claims for a circa-1947 computer readable on the circa-1963 computer technology of others, no matter how much faster.

Hall knew that the use of shorter pulses, now covered by the new definition, had been made possible by the intervening advances of others in the computing art.

There is evidence that Eckert and Mauchly did not read the 1963 Amendment before it was filed, and were not consulted about this change in definition.

The 1963 amendment to broaden the scope of all "pulse" claims was unreasonably delayed, and was not merely a logical development of the original application but rather an exigent afterthought to capture the subsequent contributions of others already in the public domain.

The "pulse" claims are invalid because (1) they are directed to an invention which had not theretofore been claimed in the application, and (2) the claimed invention had been in public use more than one year before the claims were presented.

The prior rights intervening between 1947 and 1963, by reason of the widespread manufacture, use and sale of computers of vastly greater speed than the two to five microsecond pulse characteristic of the ENIAC machine disclosed and claimed by the ENIAC patent application as filed render the broadening amendment of May 20, 1963 an improper "late claiming" of the invention thereby defined.

ENIAC patent claims 8, 9, 52, 65, 83, 86, 88, 109 and 122 which use the term "pulse", and claim 36 which uses the equivalent term "impulse" are invalid; also since the word "signal" is defined by the defendants as a "pulse", claims containing such word are equivalently invalid, e.g. 69, 75, 78, 142.

.1 Where the applicant does not originally assert claims which are added later by amendment and the subject matter of such late claims is disclosed or in general use and applicant stands by to await developments in the industry before asserting them, there is an unreasonable delay and neglect on the applicant's part rendering such late claims invalid.

.2 Where a late-filed amendment of the patent specification is important enough to constitute the basis for alleged patentablilty, the amendment constitutes new matter and cannot in fact be a basis for patentability.

.3 The long delay of a patentee in adding broadened claims to a patent application warrants an interference that such claims were added as an afterthought and not as a logical development of the original application, and where the subject matter of the later claims was in public use more than one year before such claims were first introduced, such claims are invalid.

.4 The repeated entry into interferences, resulting in long delays incident to their determination, affords no just excuse for the failure of a patent applicant to assert broader claims at an earlier date. Long delay in coming to the point with new and broader or different claims strongly confirms that the final determination to do so was an exigent afterthought, rather than a logical development of the original application.

.5 An applicant for patent cannot enlarge his pending application in such a manner as to embrace and include for the first time the essential elements of an article, device, or structure which has been in public use or on sale more than one year prior thereto, and a patent obtained in that manner does not represent patentable invention, but is mere appropriation of the inventive skills of others.

.6 Courts must regard with disfavor any attempts to enlarge the scope of an application once filed, the effect of which would be to enable the patentee to appropriate other inventions made prior to such alteration, or to appropriate that which has, in the meantime, gone into public use.